Law Firms That Appeal

A patent applicant has several options after receiving a final rejection from a patent examiner. “After final” practice is a matter of strategy, tactics, and art. The primary approaches are (1) abandon the application; (2) appeal to the Board of Patent Appeals and Interferences (BPAI); (3) file a request for continued examination (RCE) arguing against the rejection; or (4) concede scope and narrow the application (probably through an RCE). Each of these approaches differs in cost, timing, and likelihood of success. Of course, success may depend upon whether broad claims are important. And, in the background, applicants know that alternate claims can later be pursued in continuation applications (for a fee).

BPAI Appeals are generally thought to have a higher up-front cost – both in terms of PTO fees and attorney costs. However, if you win, appeals have the benefit of dramatically changing the course of the examination. Often, an applicant’s successful appeal results in an issued patent soon thereafter.

In this study, I looked at law firms involved in ex parte appeals to the BPAI that were decided in the calendar year 2008. Of the 4000+ decisions, only about 75% of the decisions mentioned the law firm name in the case caption. Using those names, I constructed the following table of the firms associated with the most decisions during 2008. It is interesting to compare Oblon Spivak and Sughrue Mion – both firms handle over 3000 patents each year – many of them involving electronics owned by non-US entities. Oblon, however, appears to have taken the strategy of appealing while Sughrue may be using alternate strategies. Foley & Lardner is regularly listed in the top-ten firms in terms of the number of patent grants – however, that firm does not make the list of having the most appeal decisions.

Some words of caution on the numbers game: (1) These are ordinarily dominated by lower cost electronics and software patents. (2) Some clients request that docketing go through their office – in those cases, the firm name would not show up here. (3) Focusing on appeals, it may be that some firms not on the list actually filed more appeal briefs. It turns out that in most cases, examiners withdraw their final rejections in the face of a high quality appeal brief.

Post navigation

56 thoughts on “Law Firms That Appeal”

A relevant factor I did not see in any of thee comments is the pre-appeal brief panel review. We make extensive use of the review process, and our success rate with these is very high, so we have fewer cases that go to the BPAI. And the cases that do go that far are the ones that a review panel thought had merit, so the easy BPAI victories have been for the most part weeded out. So I would guess that our success rate in the reported BPAI decisions might be less than at a firm that does not use this procedure as much.

Eric: If you craft your response arguments so that they can be (for the most part) cut-and-pasted into an appeal brief, then it shouldn’t take much longer to prepare an appeal than to prepare an RCE.

Also, you can’t rely exclusively on previous arguments in an RCE without getting a first OA final rejection, but you can rely on those same arguments in an appeal brief. Not only does the latter save time, but it avoids creating additional PHE.

Appeals serve another purpose – as test cases to see what arguments will convince Examiners. I appeal a case that I don’t mind abandoning (not because there is no invention, but because the internal project that supported this application has been dropped for business reasons). So I have this application and I want to make use of it. I do this because I know that all my other applications will be examined by the same group of Examiners. If this test case fails, no biggie. I am just out the money for the appeal. Typically $5-$8K w/no oral argument. If I fail, then I can cross that argument off as not convincing and look for another argument that I feel will carry the day. If I am successful, however, now I have something to wave in front of the Examiners in this art unit to show that my arguments actually do carry weight.

“My “clients” are always srs. Except this one guy. It was blatant he was just bribing with an RCE, but on the other hand, the rejection was pretty weak (one of the first ones I ever did lolz) so I let it go in favor of a better one, that took an arse long time to find art for, that he amended around. As you get more experienced some rejections just don’t look as good as they did when you first drafted them. ”

lol wut? 6k just admitted he made a crap rejection? next he’ll tell us that he judges the patentability of a claim by the prior art alone and not how the claim looks to him when he first sees it…

In most instances, you should advise your client to appeal after a second (final or non-final) office action. Note the 800 pound gorillas listed at and near the top above. You may say what you will about these firms, but they know prosecution.

An RCE should never be filed unless an amendment is necessary to overcome a 102 or 103 rejection, and prosecution is closed. In the past things were different, but this is now. The faceless bureaucrats at the PTO don’t give a sh_t about you and your client.

Because there is very little cost difference between an appeal and an RCE, filing an appeal ***with the intent of reopening prosecution*** is often a more desirable approach. All six of the appeals that I have filed in the last 18 months have resulted in re-opened prosecution with new (and usually better) art and a non-final rejection. While this can increase the time of prosecution, it improves the quality of the resulting patent by forcing the examiner to find the best art. It also avoids the risk introducing speculative limitations, which can often happen with an RCE due to the fact that the examiner hasn’t performed a thorough search.

In my limited experience, not many advise on appeal, RCE appears a common strategy but there is one thing that appeal to you, it provide you with a long time in hand (of course with extension fees) to decide your strategy…7 months from the date of Notice of Appeal—wow that is a good time

6, you’re getting mellow. I expect you to say something like “everything worth patenting has been patented” or “everything’s obvious in light of the wheel”. Instead, you admit having made a weak rejection. The 6 I know and ignore would never have admitted that.

“The whole idea behind the PTO’s strategy of reopening prosecution after an appeal is filed is to see whether the applicant is serious or will just go away. Filing an RCE doesn’t show that you’re serious, it just gives the examiner another opportunity to find your arguments “unpersuasive” and reiterate his previous rejections. So your RCE will be a waste of time and you’ll have to appeal anyway to get worthwhile claims scope. Is that really going to benefit your clients? ”

My “clients” are always srs. Except this one guy. It was blatant he was just bribing with an RCE, but on the other hand, the rejection was pretty weak (one of the first ones I ever did lolz) so I let it go in favor of a better one, that took an arse long time to find art for, that he amended around. As you get more experienced some rejections just don’t look as good as they did when you first drafted them.

“I’m sure a lot of us have gotten those 2nd office action rejections that cite brand new art.”

I see very few final rejections that cite new art for the first time, and you can respond conventionally if its a non-final 2nd rejection. Even if you do get such a final rejection, you only need to file an RCE if you’re making amendments; if you’re just arguing against the rejections then you can do that in an appeal brief.

“…usually your appeal is going to end up being an expensive RCE when the examiner reopens, and in some cases the examiner will make that reopening rejection final. Is that really going to benefit your client?”

The whole idea behind the PTO’s strategy of reopening prosecution after an appeal is filed is to see whether the applicant is serious or will just go away. Filing an RCE doesn’t show that you’re serious, it just gives the examiner another opportunity to find your arguments “unpersuasive” and reiterate his previous rejections. So your RCE will be a waste of time and you’ll have to appeal anyway to get worthwhile claims scope. Is that really going to benefit your clients?

Tthe quack above is obviously fun to read with his pretty pictures and everything, I came across him the other day. I had been reading an article in scientific american about the sun’s magnetic fields possibly affecting the gravity of those areas of the sun. They had pretty pictures as well. Those get me every time.

But looking at the official explanation:

“Gravity is caused by the mass of the Earth and has nothing to do with it’s spinning. The spinning of the Earth actually reduces the “gravity” felt by someone at the equator as compared to someone at one of the poles. It is just one of the facts of the Universe that everything that weighs anything, pulls other matter towards it, and the more it weighs, the bigger the pull.

Dr. Eric Christian
(November 2000)”

“According to Einstein’s Theory of General Relativity, gravity is the curvature of space that results from a massive object. Think of a sheet of rubber with heavy marbles placed on it. The rubber around the marbles will be curved and smaller marbles placed nearby will roll toward the heavier ones. This is analogous to the way massive objects warp space. This warping is called gravity.”

“Gravity and electric/magnetic forces are quite distinct in physics, and are not generally thought of as closely related.

Gravity is related only to mass and not to electrical charge. The gravitational force between two static point masses is proportional to the product of the masses and inversely proportional to the square of the distance between them. This leads to the concept of a gravitational field. The gravitational force is not directly related to the electric or magnetic forces.

The electrical force between two static charges is proportional to the product of their electrical charges and also is also inversely proportional to the square of the distance between them. This leads to the concept of an electric field.

The magnetic force is very closely related to the electric force, but no magnetic charges (magnetic monopoles) or monopolar magnetic fields have been observed, in spite of many careful searches. There are currently only (very, very small) upper limits on their abundances. There is no accepted proof that magnetic monopoles cannot exist, so magnetic monopoles may be found some day. The sources of magnetic fields are electrical currents, caused by moving electric charges or small dipoles associated with molecular and atomic structure.

The relationship between electricity and magnetism was written down in the 19th century by Maxwell, and his equations show elegantly the intimate relationship between electricity and magnetism.

To go back to your question: all magnetic forces on matter are also proportional to the electric charge on that matter, but also depend on the velocity of the matter. Hence, like electric forces, they are not proportional to the mass. Hence, any attribution of gravitation to electromagnetism is not possible in the current paradigms of physics.

Dr. Randy Jokipii
(February 2005)”

I never can see how weight translates directly into gravity even though there is a model that displays how it happens. Sure it occurs, but how? How do you think this occurs Einstein? Seen any works on the subject? Perhaps ones by you that go further than the surface? I haven’t gotten deep enough into the math behind those models to understand them yet. Any textbooks you know of demonstrating the math beyond the simple inverse square of the distance equation etc?

Tthe quack above is obviously fun to read with his pretty pictures and everything, I came across him the other day. I had been reading an article in scientific american about the sun’s magnetic fields possibly affecting the gravity of those areas of the sun. They had pretty pictures as well. Those get me every time.

But looking at the official explanation:

“Gravity is caused by the mass of the Earth and has nothing to do with it’s spinning. The spinning of the Earth actually reduces the “gravity” felt by someone at the equator as compared to someone at one of the poles. It is just one of the facts of the Universe that everything that weighs anything, pulls other matter towards it, and the more it weighs, the bigger the pull.

Dr. Eric Christian
(November 2000)”

“According to Einstein’s Theory of General Relativity, gravity is the curvature of space that results from a massive object. Think of a sheet of rubber with heavy marbles placed on it. The rubber around the marbles will be curved and smaller marbles placed nearby will roll toward the heavier ones. This is analogous to the way massive objects warp space. This warping is called gravity.”

“Gravity and electric/magnetic forces are quite distinct in physics, and are not generally thought of as closely related.

Gravity is related only to mass and not to electrical charge. The gravitational force between two static point masses is proportional to the product of the masses and inversely proportional to the square of the distance between them. This leads to the concept of a gravitational field. The gravitational force is not directly related to the electric or magnetic forces.

The electrical force between two static charges is proportional to the product of their electrical charges and also is also inversely proportional to the square of the distance between them. This leads to the concept of an electric field.

The magnetic force is very closely related to the electric force, but no magnetic charges (magnetic monopoles) or monopolar magnetic fields have been observed, in spite of many careful searches. There are currently only (very, very small) upper limits on their abundances. There is no accepted proof that magnetic monopoles cannot exist, so magnetic monopoles may be found some day. The sources of magnetic fields are electrical currents, caused by moving electric charges or small dipoles associated with molecular and atomic structure.

The relationship between electricity and magnetism was written down in the 19th century by Maxwell, and his equations show elegantly the intimate relationship between electricity and magnetism.

To go back to your question: all magnetic forces on matter are also proportional to the electric charge on that matter, but also depend on the velocity of the matter. Hence, like electric forces, they are not proportional to the mass. Hence, any attribution of gravitation to electromagnetism is not possible in the current paradigms of physics.

Dr. Randy Jokipii
(February 2005)”

I never can see how weight translates directly into gravity even though there is a model that displays how it happens. Sure it occurs, but how? How do you think this occurs Einstein? Seen any works on the subject? Perhaps ones by you that go further than the surface? I haven’t gotten deep enough into the math behind those models to understand them yet. Any textbooks you know of demonstrating the math beyond the simple inverse square of the distance equation etc?

I want to see something come out of the electrical arts that affects gravity by the application of electricity. That would certainly be patent worthy.

Totally bsing around here, but does anyone have an opinion on whether or not magnetic fields are in any way associated with the gravity produced by an object? I know the math behind gravity classically says no, but I just can’t shake the feeling that the two are interlinked somehow. And of course if they are … then manipulation of gravity with electricity should be fairly easy. Anyone know of any work on this subject?

“Also I’m not seeing biotech patents being issued that are anywhere close to the obvious, non-statutory crap being issued in the software and related fields.”

Your opinion on obviousness in the software and related fields would mean something if you had some basic knowledge about the technology. You don’t, so your opinion is ill-formed. You really need to take another look at the Graham factors for determing obviousness.

FYI – a comparison between the patents issued in the biotech field and the patents you are aware of issued in the other fields is MEANINGLESS to the issue at hand. The issue raised regards how the applications are being treated at the BPAI.

Since you don’t practice in the other fields, the only patents “in the other fields” you are exposed to are likely to bethe ones that get reported on this blog — hardly a fair representation. Well-written patents with quality claims, of any technology, are unlikely to get discussed on this blog.

Opinion forming based upon anecdotal evidence, and not letting real facts get in the way of a good trolling — just Mooney being Mooney.

“Also I’m not seeing biotech patents being issued that are anywhere close to the obvious, non-statutory crap being issued in the software and related fields.”

Your opinion on obviousness in the software and related fields would mean something if you had some basic knowledge about the technology. You don’t, so your opinion is ill-formed. You really need to take another look at the Graham factors for determing obviousness.

FYI – a comparison between the patents issued in the biotech field and the patents you are aware of issued in the other fields is MEANINGLESS to the issue at hand. The issue raised regards how the applications are being treated at the BPAI.

Since you don’t practice in the other fields, the only patents “in the other fields” you are exposed to are likely to bethe ones that get reported on this blog — hardly a fair representation. Well-written patents with quality claims, of any technology, are unlikely to get discussed on this blog.

Opinion forming based upon anecdotal evidence, and not letting real facts get in the way of a good trolling — just Mooney being Mooney.

“Unless you have a strong indication that the examiner will allow claims if you make certain amendments in an RCE”

I’m sure a lot of us have gotten those 2nd office action rejections that cite brand new art. If at the time to decide whether to RCE/appeal your amendments haven’t even been entered, how are you going to appeal?

In those cases where the examiner is out to lunch and stays out to lunch through final rejection, usually your appeal is going to end up being an expensive RCE when the examiner reopens, and in some cases the examiner will make that reopening rejection final. Is that really going to benefit your client?

I forgot to add why it is that foreign clients are less likely to appeal, on average. It is because appeals usually have lower reversal rates in their countries, particularly in the far East, than they do in the US.

“I suspect that the identity of a law firm has less to do with the strategy employed in this regard than the desires of its biggest patent prosecution clients. A handful of large companies whose patent applications make up a large portion of a firm’s docket may have issued standing orders to the firm to stand firm and appeal if necessary.”

This. I have one client who wants us to aggressively pursue broad claim scope, which means I appeal a lot of their cases. I have another client who hates appeals and would rather amend. Therefore, I rarely file appeals in their cases.

“That is, some people believe that filing an appeal is a waste of time and the filing of an RCE, under most circumstances, is a desired approach.”

I don’t doubt that this is true, but I’ve never understood it. Unless you have a strong indication that the examiner will allow claims if you make certain amendments in an RCE, I think RCE’s are generally a waste of time – you’re just continuing to argue with the same unreasonable examiner. And presumably you’re creating even more PHE by making new arguments or expanding on your old ones, which you don’t have to do in an appeal.

IME foreign clients are less likely to want to appeal, not more. I used to work for Oblon and currently work for another firm that also has mostly foreign origin work. Oblon is at the top of the appeal table probably because they are also at the top of the patents issued table, which ironically is because they mostly have foreign clients. It isn’t because their clients appeal more, though, just that they can throughput more apps because they write very few of them themselves and they have 100+ patent attorneys/agents. That’s why I find this table misleading.

The reason why nobody takes you seriously is that you don’t the law seriously. If the BPAI is screwing Applicants on electrical and software patents, they will be screwing Applicants on biotech patents. If you care about Applicants being treated properly for your technology, you’ll care if Applicants are treated properly with other technologies. However, you don’t care, which means your sole purpose for being on this board is to troll.

I think the stats are semi-useless without a comparison with the rankings. Off the top of my head, for quite a few years now Oblon have been 1st in patents issued, Sughrue 2nd and Birch Stewart 8th, and they at least appear in the same order in this table. Where exactly the others fall I’m not sure? What would be more telling is the number of appeals as a percentage of apps filed, for instance.

I suspect that the identity of a law firm has less to do with the strategy employed in this regard than the desires of its biggest patent prosecution clients. A handful of large companies whose patent applications make up a large portion of a firm’s docket may have issued standing orders to the firm to stand firm and appeal if necessary.

Some in-house counsel seem tired of the endless RCE game, where the first Office Action is wasted by an examiner who hadn’t yet bothered to get acquainted with an application and only gets down to business on the second Action. They instruct their lawyers to appeal in order to get a final resolution. (Unfortunately, more often than not, the examiner reopens prosecution with yet another Action.) Other in-house counsel would rather keep the ball in the air and file endless RCEs rather than concede too much claim scope.

I think the statistics would be more telling if we could see whose applications are being appealed at the firms that file the most appeals.

“You do risk getting a first office action final, but I don’t see any thing in the rules that prevents filing an RCE with no claim amendments.”

You are, of course, correct. Attorney arguments do “cut it” for submission purposes under 1.114, and attorney argument alone will be entered and considered. I should have said that option (3) is often indistinguishable from filing an after-final response with only argument. Under either option, you get either a new final or an advisory action, but both will say the same thing. The only thing the RCE does is buy you a new response period.

This ranking is useless information without at least one other factor to make it interesting. For example, Compare number of appealed cases affirmed verses reversed. Compare number of cases appealed with number of cases pending. How about, number of cases appealed, verses number abandoned? You get the idea.

There are so many factors that go into a simple ranking like this, it is impossible to make any use of the number, other than, perhaps, an indication of the size of the firms listed.

“Another problem is the disingenuousness (sleaziness?) of PTO (mis)management crowing about the “increase in the affirmance rate” being somehow indicative of the alleged “record breaking quality” when they know darn well that 80% of the rejections that get appealed are so terrible that the examiner re-opens.”

Dennis, is it too late to add John Darling to your ballot for the next PTO Director?

I am having to resort to appeals because some of the Examiners do not take you seriously until you do so.

The trend I have been seeing for myself is that many examiners are re-opening up prosecution, but the quality of their new rejections are much better than before I filed the appeal brief.

A small correction to the statements above. I believe one can file an appeal after being “twice rejected” on the claims one has in an application. This doesn’t not require that you have a Final Rejection.

“The quality of the decisions coming out of the BPAI are the lowest I’ve ever seen”

I disagree. It’s clear that the APJ’s are generally following a template-like decision format in which they clearly provide a “findings of fact” section that establishes a fairly complete record from which an appeal to the Fed. Cir. can be made. Or from which you can make a reasonable amendment to define around the rejection. Unlike the examiners, you can’t say that you don’t know what portion of the reference(s) the APJ’s relied on in making their decision. And they do provide an analysis (i.e. whatever selected quote from KSR they feel supports their decision). Even if you don’t agree with the decision, you’re not left wondering what to argue should you choose to appeal to the Fed. Cir.

But, having said that, I too have seen applicant’s arguments flagrantly ignored, and the Board has had some embarrassing reversals at the Fed. Cir. lately. (I’m thinking particularly of the glow in the dark fishing pole, or whatever it was, and Mr. Hyatt’s applications.)

The problem is not the quality of the Board decisions being issued, or some perceived lack thereof, the problem is PTO (mis)management’s permitting (encouraging?) the appeal-reopen-appeal-reopen-appeal-reopen (rinse, repeat) game the is being played in the examining corps.

Another problem is the disingenuousness (sleaziness?) of PTO (mis)management crowing about the “increase in the affirmance rate” being somehow indicative of the alleged “record breaking quality” when they know darn well that 80% of the rejections that get appealed are so terrible that the examiner re-opens.

Would you care to share your strategies? You can argue a clear teaching away, that the combination would be inoperable, that the combination would destroy the intended function of one of the references, that the references are incompatible, that the references are from divergent technical fields, etc. And none of that works more than 1% of the time.

I think there is also a fifth option of getting the supervisor involved. In cases were the primary examiner is just wrong, inexperienced, or overly stubborn getting his/her supervisor involved can be effective in getting the patent issued or examination moving a in the proper direction.

A colleague of mine has had success with this strategy. Generally, she gets the supervisor involved by conducting an in person interview at the USPTO.

Another way to get the supervisor involved is to file a notice of appeal with a request for a pre-appeal brief conference. This option saves on airfare and travel expenses. As a result of the conference the examiner may be overruled by their supervisor, which may result in examination being re-opened or the application allowed. As the appeal brief is not due until the later of one month after the decision of the conference has been mailed or two months after filing the notice of appeal, it also gives you the option of filing an RCE if the decision is not favorable or continuing with the appeal by filing an appeal brief.

The use of an appeal depends upon what exactly you’re appealing. If you’re appealing a 103 for any reason other than the combination of references fails to show all claim limitations, you’re going to lose.

I’ll only proceed to the board when I contend a claim limitation is not disclosed by the prior art and the examiner contends that it is disclosed thereby.

Appealing isn’t the cure all it used to be. The quality of the decisions coming out of the BPAI are the lowest I’ve ever seen — which is to be expected considering most of the APJs are inexperienced attorneys with mostly USPTO experience and operating under a regime that was hotile to patents.

Every decision I’ve seen recently is blatantly ignoring arguments by Appellants — it is easy to affirm when you ignore the best arguments. If you want an even-handed review of the facts/law, your best bet now is to go to the Federal Circuit.

What the USPTO couldn’t acheive by their onerous Appeal Brief rules package, they can achieve by affirming all but the most egregious of Examiner error. When appealing isn’t successful, applicants will amend more. When amending isn’t successful, they’ll just abandon. Over time, many Applicants will stop appealing, fighting rejections, or even filing — all goals of the past USPTO regime.

The only way to stop this from happening is to go to the Federal Circuit. If the BPAI gets their hands slapped a hundred times for bad decisions, particularly with a (hopefully) new management coming in, perhaps the attitude may be changed at the BPAI. However, given the cost of that endeavor, I doubt it will ever happen.